Belgium: Belgid’Or 3D mark infringement leads to counterfeiting verdict

October 28 2015

In its decision of January 27 2015 Côte d'Or vs Belgid'Or, the eighth chamber of the Brussels Court of appeal had to rule on different Kraft Foods trade marks and the possible infringement thereof by Natrajacali.

Kraft Foods markets Côte d'Or chocolates and is the owner of several trademarks, including the Benelux and Community word trade marks Côte d'Or, the Benelux semi-figurative trade mark (figure 1) and a Benelux three-dimensional trade mark for its specific chocolate bars characterised by three grooves on both sides of the bar (figure 2).

On the one hand, the Court ruled that by using the sign Belgid'Or, Natrajacali did not infringe Kraft Foods' well-known trade mark Côte d'Or. It held that the signs at hand are visually and phonetically similar to a low level and that they do not share any conceptual meaning, so that the signs are globally similar to a low level. Even though Côte d'Or is considered a well-known trade mark, the limited similarity between the signs precludes a likelihood of confusion – or association – to arise between the signs at hand.

The Court also concluded that the marketed packaging of Natrajacali (figure 3) did not infringe Kraft's semi-figurative trade mark (figure 4), in spite of the fact that the defendant used a retro script for Belgid'Or in its packaging, looking like the one Kraft uses for some of its Côte d'Or chocolates. The Court emphasised that Kraft does not enjoy a monopoly on retro policies for chocolates.

On the other hand, the Court acknowledged Kraft Foods' claim based on its three-dimensional trade mark for chocolate bars. According to the Court, by using specific chocolate bars characterised by three grooves on both sides, Natrajacali infringed Kraft Foods' three-dimensional trade mark rights. Hence, Natrajacali was ordered to stop marketing its counterfeit chocolates, to stop commercialising chocolate bars with identical or similar form to Kraft Foods' three-dimensional trade mark and to refrain from depicting it on its packaging.

Finally, the Court dismissed the claim based on unfair trade mark practices since no transfer of goodwill occurred and Natrajacali didn't produce any misleading advertising relating to its goods. Even though Natrajacali marketed a similar shape of chocolate bars, it didn't act in contradiction with the market's fair practices.

Overall, this decision shows the direct and indirect effects of three-dimensional trade marks: based on its 3D trademark, Kraft Foods got Natrajali ordered to change the form of its chocolate bars and its packaging as it depicts the infringing goods. The conclusion is that holding a 3D trade mark allows the owner to contest the use of an identical or similar shape for identical or similar goods and to forbid third parties from depicting it on its packaging, a general rule to be remembered when advising on whether to register 3D trade marks.